Patents Act 2004
CHAPTER 16
CONTENTS
Amendments of the 1977 Act relating to international obligations
1 Methods of treatment or diagnosis
2 Amendment of patents after grant3 Relief for partially valid patent4 Revocation5 Further amendments relating to international obligations
Other amendments of the 1977 Act
6 Remedies in entitlement proceedings
7 Restrictions on applications abroad by United Kingdom residents8 Term of patent and periods allowed for payment of renewal fees9 Co-ownership
10 Compensation of employees for certain inventions11 Enforcement of damages12 Threats of infringement proceedings13 Opinions by Patent Office as to validity or infringement14 Costs and expenses in infringement proceedings etc15 Security for costs
Supplemental
16 Amendments, repeals and revocations
17 Commencement etc18 Short title and extent
Schedule 1 — Amendments relating to international obligationsSchedule 2 — Minor and consequential amendmentsSchedule 3 — RepealsELIZABETH II c. 16
Patents Act 2004
2004 CHAPTER 16
An Act to amend the law relating to patents. [22nd July 2004]
E IT ENACTED  by the Queen’s most Excellent Majesty, by and with the advice and
consent of the Lords Spiritual and Temporal, and Commons, in this present
Parliament assembled, and by the authority of the same, as follows:— 
Amendments of the 1977 Act relating to international obligations
1 Methods of treatment or diagnosis
After section 4 of the Patents Act 1977 (c. 37) (“the 1977 Act”) there is inserted—
“4A  Methods of treatment or diagnosis
(1) A patent shall not be granted for the invention of—
(a) a method of treatment of the human or animal body by surgery
or therapy, or
(b) a method of diagnosis practised on the human or animal body.
(2) Subsection (1) above does not a pply to an invention consisting of a
substance or composition for use in any such method.
(3) In the case of an invention consis ting of a substance or composition for
use in any such method, the fact that the substance or compositionforms part of the state of the art shall not prevent the invention frombeing taken to be new if the use of the substance or composition in anysuch method does not form part of the state of the art.
(4) In the case of an invention consis ting of a substance or composition for
a specific use in any such method, the fact that the substance orcomposition forms part of the state of the art shall not prevent theinvention from being taken to be new if that specific use does not formpart of the state of the art.”BPatents Act 2004 (c. 16) 2
2 Amendment of patents after grant
(1) In section 27 of the 1977 Act (general power to amend after grant), after
subsection (5) there is inserted—
“(6) In considering whether or not to allow an application under this
section, the comptroller shall have regard to any relevant principlesapplicable under the European Patent Convention.”
(2) In section 58 of that Act (references of disputes as to Crown use)—
(a) in subsection (6), after “satisfied that” there is inserted “(a)” and at the
end there is inserted “and
(b) the relief is sought in good faith”;
(b) in subsection (8), after “proves that” there is inserted “(a)” and after
“knowledge, and” there is inserted—
“(b) the relief is sought in good faith,
and”.
(3) In section 62 of that Act (restrictions on recovery of damages for infringement),
in subsection (3), after “satisfied that” there is inserted “(a)” and at the end thereis inserted “and
(b) the proceedings are brought in good faith.”
(4) In section 63 of that Act (relief for infringement of partially valid patent), in
subsection (2), after “proves that” there is inserted “(a)” and after “knowledge,and” there is inserted—
“(b) the proceedings are brought in good faith,
and”.
(5) In section 75 of that Act (amendment in infringement or revocation
proceedings), after subsection (4) there is inserted—
“(5) In considering whether or not to allow an amendment proposed under
this section, the court or the comptroller shall have regard to anyrelevant principles applicable under the European Patent Convention.”
3 Relief for partially valid patent
(1) In section 63 of the 1977 Act (relief for infringement of partially valid patent),
after subsection (3) there is inserted—
“(4) The court or the comptroller may also grant relief under this section in
the case of a European patent (UK) on condition  that the claims of the
patent are limited to its or his satisfaction by the European Patent Officeat the request of the proprietor.”
(2) In section 58 of that Act (references of disputes as to Crown use), after
subsection (9) there is inserted—
“(9A) The court may also grant such relief in the case of a European patent
(UK) on condition that the claims of the patent are limited to itssatisfaction by the European Patent Office at the request of theproprietor.”
4 Revocation
In section 72 of the 1977 Act (power to revoke patents on application), inPatents Act 2004 (c. 16) 3
subsection (4), “under section 75 below” is omitted and after that subsection
there is inserted—
“(4A) The reference in subsection (4) above to the specification being
amended is to its being amended under section 75 below and also, inthe case of a European patent (UK), to its being amended under anyprovision of the European Patent Convention under which the claimsof the patent may be limited by amendment at the request of theproprietor.”
5 Further amendments relating to international obligations
Schedule 1 (further amendments of the 1 977 Act relating to international
obligations) has effect.
Other amendments of the 1977 Act
6 Remedies in entitlement proceedings
(1) In section 8 of the 1977 Act (reference before grant of patent of questions about
entitlement etc), in paragraph (c) of su bsection (3) (powers of comptroller), for
“but after the publication of the application” there is substituted “(whether theapplication is refused or withdrawn bef ore or after its publication)”.
(2) In section 11 of that Act (effect of transfer of application under section 8 or 10)
after subsection (3) (protection of original  applicant or his licensee) there is
inserted—
“(3A) If, before registration of a reference under section 8 above resulting in
the making of an order under subsection (3) of that section, thecondition in subsection (3)(a) or (b ) above is met, the original applicant
or any of the applicants or the licensee shall, on making a requestwithin the prescribed period to the new applicant, be entitled to begranted a licence (but not an exclusive licence) to continue working or,as the case may be, to work the invention so far as it is the subject of thenew application.”
(3) In subsection (4) of that section, for “Any such licence” there is substituted “A
licence under subsection (3) or (3A) above”.
(4) In subsection (5) of that section—
(a) after “(2)” there is inserted “or (3A)”;
(b) after “proceed” there is inserted “or, as the case may be, who makes the
new application”.
7 Restrictions on applications abroad by United Kingdom residents
(1) In section 23 of the 1977 Act (restrictions on applications abroad by United
Kingdom residents), in subsection (1), after “an invention” there is inserted “ifsubsection (1A) below applies to that application,”.
(2) After that subsection there is inserted—
“(1A) This subsection applies to an application if—Patents Act 2004 (c. 16) 4
(a) the application contains infor mation which relates to military
technology or for any other reason publication of theinformation might be prejudicial to national security; or
(b) the application contains informat ion the publication of which
might be prejudicial to the safety of the public.”
(3) After subsection (3) of that section there is inserted—
“(3A) A person is liable under subsection (3) above only if—
(a) he knows that filing the application, or causing it to be filed,
would contravene this section; or
(b) he is reckless as to whether fi ling the application, or causing it
to be filed, would contravene this section.”
8 Term of patent and periods allowed for payment of renewal fees
(1) In section 25 of the 1977 Act (term of patent), for subsection (3) there is
substituted—
“(3) Where any renewal fee in respect of a patent is not paid by the end of
the period prescribed for payment (the “prescribed period”) the patentshall cease to have effect at the end of such day, in the final month ofthat period, as may be prescribed.”
(2) In subsection (4) of that section, for “the period of six months immediately
following the end of the prescribed period” there is substituted “the periodending with the sixth month after the month in which the prescribed periodends”.
(3) In section 28 of that Act (restoration of lapsed patents), in subsection (3), for the
words from the second “within” to “that period” there is substituted “withinthe period ending with the sixth month after the month in which the prescribedperiod ended”.
(4) In section 46 of that Act (patentee’s application for entry in register that
licences are available as of right)—
(a) for paragraph (d) of subsection (3) there is substituted—
“(d) if the expiry date in relation to a renewal fee falls after
the date of the entry, that fee shall be half the fee whichwould be payable had the entry not been made.”;
(b) after subsection (3A) there is inserted—
“(3B) For the purposes of subsection (3)(d) above the expiry date in
relation to a renewal fee is the day at the end of which, by virtueof section 25(3) above, the patent in question ceases to haveeffect if that fee is not paid.”
9 Co-ownership
In section 36 of the 1977 Act (co-own ership), in subsection (3), after “others”
there is inserted—
“(a) amend the specification of the patent or apply for such an
amendment to be allowed or for the patent to be revoked, or
(b)”.Patents Act 2004 (c. 16) 5
10 Compensation of employees for certain inventions
(1) In section 40 of the 1977 Act (compensation of employees for certain
inventions), for subsection (1) there is substituted—
“(1) Where it appears to the court or th e comptroller on an application made
by an employee within the prescribed period that—
(a) the employee has made an invention belonging to the employer
for which a patent has been granted,
(b) having regard among other things to the size and nature of the
employer’s undertaking, the invention or the patent for it (orthe combination of both) is of outstanding benefit to theemployer, and
(c) by reason of those facts it is just that the employee should be
awarded compensation to be paid by the employer,
the court or the comptroller may award him such compensation of an
amount determined under section 41 below.”
(2) In subsection (2)(c) of that section, for “the patent” there is substituted “the
invention or the patent for it (or both)”.
(3) In section 41 of that Act (amount of compensation), for subsection (1) there is
substituted—
“(1) An award of compensation to an employee under section 40(1) or (2)
above shall be such as will secure for the employee a fair share (havingregard to all the circumstances) of the benefit which the employer hasderived, or may reasonably be expected to derive, from any of thefollowing—
(a) the invention in question;
(b) the patent for the invention;
(c) the assignment, assignation or grant of—
(i) the property or any right in the invention, or
(ii) the property in, or any righ t in or under, an application
for the patent,
to a person connected with the employer.”
(4) In subsections (4) and (5) of that section, the words “a patent for” are omitted.(5) In subsection (5)(a) of that section, after “the patent” there is inserted “for it”.
(6) In section 43 of that Act (provisions supplementing sections 39 to 42), in
subsection (5)—
(a) for “a patent” there is subst ituted “an invention or patent”;
(b) for “the patent”, in both places, there is substituted “it”.
(7) After subsection (5) of that section there is inserted—
“(5A) For the purposes of sections 40 and 41 above the benefit derived or
expected to be derived by an employer from an invention shall notinclude any benefit derived or expected to be derived from theinvention after the patent for it has expired or has been surrendered orrevoked.”
(8) This section, and the entry in Schedule 3 corresponding to subsection (4), apply
in relation to an invention the patent for which is applied for on or after thecommencement of this section.Patents Act 2004 (c. 16) 6
In this subsection “patent” has the meaning given by section 43(4) of the 1977
Act.
11 Enforcement of damages
In section 61 of the 1977 Act (proceedings for infringement of a patent), after
subsection (6) there is inserted—
“(7) If the comptroller awards any sum by way of damages on a reference
under subsection (3) above, then—
(a) in England and Wales, the sum shall be recoverable, if a county
court so orders, by execution issued from the county court orotherwise as if it were payable under an order of that court;
(b) in Scotland, payment of the sum may be enforced in like
manner as an extract registered decree arbitral bearing awarrant for execution issued by the sheriff court of anysheriffdom in Scotland;
(c) in Northern Ireland, payment of the sum may be enforced as if
it were a money judgment.”
12 Threats of infringement proceedings
(1) Section 70 of the 1977 Act (remedy for groundless threats of infringement
proceedings) is amended as follows.
(2) For subsection (2) there is substituted—
“(2) In any such proceedings the claimant or pursuer shall, subject to
subsection (2A) below, be entitled to the relief claimed if he proves thatthe threats were so made and satisfies the court that he is a personaggrieved by them.
(2A) If the defendant or defender proves that the acts in respect of which
proceedings were threatened constitute or, if done, would constitute aninfringement of a patent—
(a) the claimant or pursuer shall be entitled to the relief claimed
only if he shows that the paten t alleged to be infringed is invalid
in a relevant respect;
(b) even if the claimant or pursuer does show that the patent is
invalid in a relevant respect, he shall not be entitled to the reliefclaimed if the defendant or defender proves that at the time ofmaking the threats he did not know, and had no reason tosuspect, that the patent was invalid in that respect.”
(3) For subsection (4) there is substituted—
“(4) Proceedings may not be brought under this section for—
(a) a threat to bring proceedings for an infringement alleged to
consist of making or importing a product for disposal or ofusing a process, or
(b) a threat, made to a person who has made or imported a product
for disposal or used a process, to bring proceedings for aninfringement alleged to consist of doing anything else inrelation to that product or process.”Patents Act 2004 (c. 16) 7
(4) For subsection (5) there is substituted—
“(5) For the purposes of this section a person does not threaten another
person with proceedings for infringement of a patent if he merely—
(a) provides factual information about the patent,
(b) makes enquiries of the other person for the sole purpose of
discovering whether, or by whom, the patent has beeninfringed as mentioned in subsection (4)(a) above, or
(c) makes an assertion about the patent for the purpose of any
enquiries so made.”
(5) After subsection (5) there is inserted—
“(6) In proceedings under this section for threats made by one person (A) to
another (B) in respect of an alleged infringement of a patent for an
invention, it shall be a defence for A to prove that he used his bestendeavours, without success, to discover—
(a) where the invention is a product, the identity of the person (if
any) who made or (in the case of an imported product)imported it for disposal;
(b) where the invention is a process and the alleged infringement
consists of offering it for use, the identity of a person who usedthe process;
(c) where the invention is a process and the alleged infringement is
an act falling within section 60(1)(c) above, the identity of theperson who used the process to produce the product inquestion;
and that he notified B accordingly, before  or at the time of making the
threats, identifying the endeavours used.”
13 Opinions by Patent Office as to validity or infringement
(1) After section 74 of the 1977 Act there is inserted—
“Opinions by Patent Office
74A Opinions as to validity or infringement
(1) The proprietor of a patent or any other person may request the
comptroller to issue an opinion—
(a) as to whether a particular act constitutes, or (if done) would
constitute, an infringement of the patent;
(b) as to whether, or to what extent, the invention in question is not
patentable because the condition in section 1(1)(a) or (b) aboveis not satisfied.
(2) Subsection (1) above applies even if the patent has expired or has been
surrendered.
(3) The comptroller shall issue an opinion if requested to do so under
subsection (1) above, but shall not do so—
(a) in such circumstances as may be prescribed, or
(b) if for any reason he considers it inappropriate in all the
circumstances to do so.Patents Act 2004 (c. 16) 8
(4) An opinion under this section shal l not be binding for any purposes.
(5) An opinion under this section sh all be prepared by an examiner.
(6) In relation to a decision of the comptroller whether to issue an opinion
under this section—
(a) for the purposes of section 101 below, only the person making
the request under subsection (1) above shall be regarded as aparty to a proceeding before the comptroller; and
(b) no appeal shall lie at the instance of any other person.
74B Reviews of opinions under section 74A
(1) Rules may make provision for a review before the comptroller, on an
application by the proprietor or an exclusive licensee of the patent inquestion, of an opinion under section 74A above.
(2) The rules may, in particular—
(a) prescribe the circumstances in  which, and the period within
which, an application may be made;
(b) provide that, in prescribed circumstances, proceedings for a
review may not be brought or continued where otherproceedings have been brought;
(c) make provision under which, in prescribed circumstances,
proceedings on a review are to be treated for prescribedpurposes as if they were proceedings under section 61(1)(c) or(e), 71(1) or 72(1)(a) above;
(d) provide for there to be a right of appeal against a decision made
on a review only in prescribed cases.”
(2) In section 74 of that Act (proceedings in which validity of patent may be put in
issue), in subsection (8), after “the validity of a patent is not put in issue merelybecause” there is inserted “(a)” and at the end there is inserted “or
(b) its validity is being considered in connection with an opinion
under section 74A below or a review of such an opinion.”
(3) In section 32(2) of that Act (rules about the register of patents), after paragraph
(b) there is inserted—
“(ba) the entering on the register of notices concerning opinions
issued, or to be issued, under section 74A below;”.
14 Costs and expenses in infringement proceedings etc
(1) Section 106 of the 1977 Act (costs and expenses in proceedings before the Court
under s. 40) is amended as follows.
(2) In subsection (1) (relevance of parties’ financial position), for the words from
“proceedings” to “the court)” there is substituted “proceedings to which thissection applies”.
(3) After that subsection there is inserted—
“(1A) This section applies to proceedings before the court (including
proceedings on an appeal to the court) which are—
(a) proceedings under section 40;
(b) proceedings for infringement;Patents Act 2004 (c. 16) 9
(c) proceedings under section 70; or
(d) proceedings on an application for a declaration or declarator
under section 71.”
(4) This section applies in relation to proceedings commenced on or after the
commencement of this section.
15 Security for costs
In section 107 of the 1977 Act (costs and expenses), for subsection (4) there is
substituted—
“(4) The comptroller may make an order for security for costs or expenses
against any party to proceedings before him under this Act if—
(a) the prescribed conditions are met, and
(b) he is satisfied that it is just to make the order, having regard to
all the circumstances of the case;
and in default of the required security being given the comptroller may
treat the reference, application or notice in question as abandoned.”
Supplemental
16 Amendments, repeals and revocations
(1) Schedule 2 (minor and consequential amendments) has effect.
(2) The enactments set out in Schedule 3 are repealed to the extent specified.
(3) Article 6 of the Patent Office Trading Fund Order 1991 (S.I. 1991/1796) is
revoked.
17 Commencement etc
(1) The preceding provisions of this Act (except those mentioned in subsection (2))
come into force on such day as the Secretary of State may by order made bystatutory instrument appoint.
(2) Paragraphs 7 and 23 of Schedule 2 come into force with the commencement of
the Regulatory Reform (Patents) Order 2004.
(3) An order under this section may appoint different days for different purposes.(4) An order under this section may make—
(a) any supplementary, incidental or consequential provision, or
(b) any transitory, transitional or saving provision,
that the Secretary of State considers necessary or expedient for the purposes of,
in consequence of or for giving full effect to any provision of this Act.
(5) A statutory instrument containing provision made by virtue of subsection (4)
is subject to annulment in pursuance of a resolution of either House ofParliament, unless the only suc h provision it contains is transitory, transitional
or saving provision.
(6) The provision that may be made under subsection (4) includes provision
amending or repealing any enactment or instrument.Patents Act 2004 (c. 16) 10
(7) A statutory instrument containing an order under this section that adds to,
replaces or omits any part of the text of an Act is not to be made unless a draftof the instrument has been laid before, and approved by a resolution of, each
House of Parliament; and subsection (5) does not apply to such an instrument.
18 Short title and extent
(1) This Act may be cited as the Patents Act 2004.(2) This Act has the same extent as the 1977 Act.Patents Act 2004 (c. 16)
Schedule 1 — Amendments relating to international obligations11
SCHEDULES
SCHEDULE 1 Section 5
AMENDMENTS  RELATING  TO INTERNATIONAL  OBLIGATIONS
1 The 1977 Act is amended as follows.
2 In section 77 (effect of European patent (UK)), in subsection (5)(a), after
“restored” there is inserted “or is revoked by the Board of Appeal and issubsequently restored by the Enlarged Board of Appeal”.
3 (1) Section 78 (effect of filing an  application for a European patent (UK)) is
amended as follows.
(2) In subsection (5A), at the end there is inserted “; and the occurrence of any
event mentioned in subsection (5)(b) shall not prevent matter contained inan application for a European patent (UK) becoming part of the state of theart by virtue of section 2(3) above as regards other inventions where theevent occurs before the publication of that application.”
(3) For subsection (6) there is substituted—
“(6) Where, between subsections (1) to (3) above ceasing to apply to an
application for a European patent (UK) and the re-establishment ofthe rights of the applicant, a person—
(a) begins in good faith to do an act which would constitute an
infringement of the rights conferred by publication of the
application if those subsections then applied, or
(b) makes in good faith effective and serious preparations to do
such an act,
he shall have the right to continue to do the act or, as the case may be,
to do the act, notwithstanding subsections (1) to (3) applying againand notwithstanding the grant of the patent.
(6A) Subsections (5) and (6) of section 20B above have effect for the
purposes of subsection (6) above as they have effect for the purposesof that section and as if the references to subsection (4) of that sectionwere references to subsection (6) above.
(6B) Subject to subsection (6A) above, the right conferred by subsection
(6) above does not extend to granting a licence to another person todo the act in question.
(6C) Subsections (6) to (6B) above apply in relation to the use of a patented
invention for the services of the Crown as they apply in relation to aninfringement of the rights conferred by publication of the application(or, as the case may be, infringement of the patent).
“Patented invention” has the same meaning as in section 55 above.”Patents Act 2004 (c. 16)
Schedule 1 — Amendments relating to international obligations12
4 In section 80 (authentic text of European patents and patent applications),
for subsection (4) there is substituted—
“(4) Where a correction of a translation is published under subsection (3)
above and before it is so published a person—
(a) begins in good faith to do an act which would not constitute
an infringement of the patent as originally translated, or of
the rights conferred by publication of the application asoriginally translated, but would do so under the amendedtranslation, or
(b) makes in good faith effective and serious preparations to do
such an act,
he shall have the right to continue to do the act or, as the case may be,
to do the act, notwithstanding the publication of the correctedtranslation and notwithstanding the grant of the patent.
(5) Subsections (5) and (6) of section 28A above have effect for the
purposes of subsection (4) above as they have effect for the purposesof that section and as if—
(a) the references to subsection (4) of that section were references
to subsection (4) above;
(b) the reference to the registered proprietor of the patent
included a reference to the applicant.
(6) Subject to subsection (5) above, the right conferred by subsection (4)
above does not extend to granting a licence to another person to dothe act in question.
(7) Subsections (4) to (6) above apply in relation to the use of a patented
invention for the services of the Crown as they apply in relation to aninfringement of the patent or of the rights conferred by thepublication of the application.
“Patented invention” has the same meaning as in section 55 above.”
5 (1) Section 81 (conversion of European patent applications) is amended as
follows.
(2) In subsection (1), for the words following “this Act” there is substituted
“where the application is deemed to be withdrawn under the provisions ofthe European Patent Convention relating to the time for forwardingapplications to the European Patent Office”.
(3) In subsection (2)—
(a) paragraph (a) and the “that” preceding it are omitted;
(b) in paragraph (b), for the words preceding sub-paragraph (i) there is
substituted “that”;
(c) in paragraph (c), for “in either case” there is substituted “that”.
6 Sections 86 and 87 (implementation of Community Patent Convention and
decisions under it) are omitted.
7 Section 89(4) (circumstances in which a pplication treated as an international
application for a patent (UK)) is omitted.
8 In section 89B(2) (adaptation of prov isions in relation to international
applications), for the words following “when the” there is substituted“national phase of the application begin s or, if later, when published in
accordance with the Treaty”.Patents Act 2004 (c. 16)
Schedule 1 — Amendments relating to international obligations13
9 (1) Section 130 (interpretation) is amended as follows.
(2) In subsection (1)—
(a) in the definition of “application for a European patent (UK)” and
“international application for a patent (UK)”, after “and” there isinserted “(subject to subsection (4A) below)”;
(b) at the end of the definition of “designate” there is inserted “and
includes a reference to a country being treated as designated inpursuance of the convention or treaty”.
(3) After subsection (4) there is inserted—
“(4A) An international application for a patent is not, by reason of being
treated by virtue of the European Patent Convention as anapplication for a European patent (UK), to be treated also as aninternational application for a patent (UK).”
(4) After subsection (5) there is inserted—
“(5A) References in this Act to the amendment of a patent or its
specification (whether under this Act or by the European PatentOffice) include, in particular, limitation of the claims (as interpretedby the description and any drawings referred to in the description orclaims).”
SCHEDULE 2
Section 16
MINOR  AND  CONSEQUENTIAL  AMENDMENTS
1 (1) The 1977 Act is amended as follows.
(2) In this Schedule, “the Regulatory Reform Order” means the Regulatory
Reform (Patents) Order 2004.
2 In section 1 (patentable inventions), in subsection (1)(d), after “subsections
(2) and (3)” there is inserted “or section 4A”.
3 In section 2 (novelty), subsection (6) is omitted.4 In section 4 (industrial application)—
(a) in subsection (1), “Subject to subsection (2) below”, and
(b) subsections (2) and (3),
are omitted.
5 In section 12 (reference before grant of foreign or convention patent of
questions about entitlement etc), in subsection (6)—
(a) in paragraph (a), after “application is withdrawn” there is inserted
“whether before or”;
(b) in paragraph (c), for “but after” there is substituted “or the”.
6 In section 16(1) (publication of application), after “section 22 below” there is
inserted “and to any prescribed restrictions”.
7 In section 20B (inserted by the Regulatory Reform Order) (effect ofPatents Act 2004 (c. 16)
Schedule 2 — Minor and consequential amendments14
reinstatement of applications), after subsection (6) there is inserted—
“(6A) The above provisions apply in relation to the use of a patented
invention for the services of the Crown as they apply in relation toinfringement of the rights conferred by publication of the applicationfor a patent (or, as the case may be, infringement of the patent).
“Patented invention” has the same meaning as in section 55 below.”
8 (1) Section 22 (information prejudicial to defence of realm or safety of public) is
amended as follows.
(2) In the heading, for “defence of realm” there is substituted “national
security”.
(3) In subsections (1) and (5)(a), (c) and (d), for “the defence of the realm” there
is substituted “national security”.
(4) In subsection (6)—
(a) in paragraph (a), for the words from “inspect and authorise” to “in
connection with it” there is substituted—
“(i) inspect the application and any documents sent to the
comptroller in connection with it;
(ii) authorise a government body with responsibility for
the production of atomic energy or for research intomatters connected with its production or use, or aperson appointed by such a government body, toinspect the application and any documents sent to thecomptroller in connection with it;”;
(b) for the words from “that Authority” to the end there is substituted “a
government body or a person appointed by a government body
carries out an inspection which the body or person is authorised tocarry out under paragraph (a) above, the body or (as the case may be)the person shall report on the inspection to the Secretary of State assoon as practicable.”
9 In section 24 (publication and certificate of grant), after subsection (3) there
is inserted—
“(4) Subsection (3) above shall not require the comptroller to identify as
inventor a person who has waived his right to be mentioned asinventor in any patent granted for the invention.”
10 (1) Section 38 (effect of transfer of patent under section 37) is amended as
follows.
(2) In subsection (3), after “new proprietor or proprietors” there is inserted “or,
as the case may be, the new applicant”.
(3) In subsection (5), after “proprietors of the patent” there is inserted “or, as the
case may be, the new applicant”.
11 In section 41(10) (method of enforcing in Scotland certain orders made by
comptroller), for “a recorded decree arbitral” there is substituted “an extractregistered decree arbitral bearing a warrant for execution issued by thesheriff court of any sheriffdom in Scotland.”
12 Section 53(1) (compulsory licence s: Community Patent Convention) is
omitted.Patents Act 2004 (c. 16)
Schedule 2 — Minor and consequential amendments15
13 Section 60(4) (meaning of infringement: Community Patent Convention) is
omitted.
14 In section 61 (proceedings for infringemen t of patent), in subsection (4)(b),
for “plaintiff” there is substituted “claimant”.
15 In section 62(2) (discretion to refuse damages etc for infringement
committed while fees unpaid), for “any further period specified under”there is substituted “the further period specified in”.
16 In section 63 (relief for infrin gement of partially valid patent), in subsection
(2), for “plaintiff” there is substituted “claimant”.
17 In section 70 (remedy for groundless threats of infringement proceedings),
in subsection (3)(c), for “plaintiff” there is substituted “claimant”.
18 In section 72(1) (power to revoke pa tents on application), “on the application
of any person” is omitted and after the first mention of “invention” there isinserted “on the application of any person (including the proprietor of thepatent)”.
19 In section 75 (amendment of paten t in infringement or revocation
proceedings), in subsection (1), for “is” there is substituted “may be”.
20 In section 91(1) (evidence relating to th e conventions: judicial notice), for “or
Community patents kept under it” there is substituted “patents kept underthe European Patent Convention”.
21 In section 95 (financial provision)—
(a) in subsection (1), “the Community Patent Convention” is omitted;
(b) in subsection (2), for “either of those conventions” there is
substituted “that convention”.
22 In sections 103 and 105 (legal privilege) , in the definition of “the relevant
conventions” in subsection (2), “ the Community Patent Convention” is
omitted.
23 In section 117A (inserted by the Regulatory Reform Order) (effect of
resuscitating applications), after subsection (6) there is inserted—
“(7) The above provisions apply in relation to the use of a patented
invention for the services of the Crown as they apply in relation toinfringement of the rights conferred by publication of the applicationfor a patent (or, as the case may be, infringement of the patent).
“Patented invention” has the same meaning as in section 55 above.”
24 (1) Section 120 (hours of business and excluded days) is amended as follows.
(2) In subsection (1)—
(a) for “Rules may specify” there is substituted “The comptroller may
give directions specifying”;
(b) for “and may specify” there is substituted “and the directions may
specify”.
(3) After subsection (2) there is inserted—
“(3) Directions under this section shall be published in the prescribed
manner.”
25 In section 121 (comptroller’s annual report)—Patents Act 2004 (c. 16)
Schedule 2 — Minor and consequential amendments16
(a) for “1st June” there is substituted “1st December”;
(b) for “year”, in both places, there is substituted “financial year”;
(c) “the Community Patent Convention” is omitted;
(d) for “those conventions” there is substituted “that convention”.
26 (1) Section 123 (rules) is amended as follows.
(2) In subsection (2), for paragraph (i) there is substituted—
“(i) giving effect to an inventor’s rights to be mentioned
conferred by section 13, and providing for an inventor’swaiver of any such right to be subject to acceptance by thecomptroller;”.
(3) After that subsection there is inserted—
“(2A) The comptroller may set out in directions any forms the use of which
is required by rules; and any such  directions shall be published in the
prescribed manner.”
(4) Subsections (4) and (5) are omitted.
27 In section 130(1) (interpretation)—
(a) the definition of “Community patent” and the “and” preceding it are
omitted;
(b) in the definition of “relevant convention court”, “the Community
Patent Convention” is omitted.
28 In section 131 (Northern Ireland), at the end there is inserted—
“(f) any reference to a claimant in cludes a reference to a plaintiff.”Patents Act 2004 (c. 16)
Schedule 3 — Repeals17
SCHEDULE 3 Section 16
REPEALS
Short title and chapter Extent of repeal
Patents Act 1977 (c. 37) Section 2(6).
In section 4—
(a) in subsection (1), the words “Subject to
subsection (2) below”;
(b) subsections (2) and (3).
In section 41(4) and (5), the words “a patent for”.
Section 53(1).
Section 60(4).In section 72—
(a) in subsection (1), the words “on the
application of any person”;
(b) in subsection (4), the words “under
section 75 below”.
In section 81(2), paragr aph (a) and the word
“that” preceding it.
Sections 86 and 87.
Section 89(4).In section 95(1), the words “the Community
Patent Convention”.
In section 103(2), in the definition of “the
relevant conventions”, the words “theCommunity Patent Convention”.
In section 105(2), in the definition of “the
relevant conventions”, the words “theCommunity Patent Convention”.
In section 106, in the heading, the words “under
s. 40”.
In section 121, the words “the Community
Patent Convention”.
In section 123, subsections (4) and (5).In section 130(1)—
(a) the definition of “Community patent”
and the word “and” preceding it;
(b) in the definition of “relevant convention
court”, the words “the CommunityPatent Convention”.
?Crown copyright 2004
Printed in the UK by The Stationery O Yce Limited
under the authority and superintendence of Carol Tullo, Controller of
Her Majesty’s Stationery O Yce and Queen’s Printer of Acts of Parliament